The "Prior Inventions" clause typically outlines any inventions or intellectual property that an employee developed before joining a company, which are excluded from the company’s claim of ownership over inventions created during the term of employment. This clause serves to protect both the employee's rights to their pre-existing inventions and the company's rights over anything developed on their time and resources.
2.3 Prior Inventions. (a)On the signature page to this Agreement is a list describing any Inventions that (i) are owned by me or in which I have an interest and that were made or acquired by me prior to my date of first employment by Company, and (ii) may relate to Company’s business or actual or demonstrably anticipated research or development, and (iii) are not to be assigned to Company (“Prior Inventions”). If no such list is attached, I represent and warrant that no Inventions that would be classified as Prior Inventions exist as of the date of this Agreement. (b)I agree that if I use any Prior Inventions and/or Nonassignable Inventions in the scope of my employment, or if I include any Prior Inventions and/or Nonassignable Inventions in any product or service of Company, or if my rights in any Prior Inventions and/or any Nonassignable Inventions may block or interfere with, or may otherwise be required for, the exercise by Company of any rights assigned to Company under this Agreement (each, a “License Event”), (i) I will immediately notify Company in writing, and (ii) unless Company and I agree otherwise in writing, I hereby grant to Company a non-exclusive, perpetual, transferable, fully-paid, royalty-free, irrevocable, worldwide license, with rights to sublicense through multiple levels of sublicensees, to reproduce, make derivative works of, distribute, publicly perform, and publicly display in any form or medium (whether now known or later developed), make, have made, use, sell, import, offer for sale, and exercise any and all present or future rights in, such Prior Inventions and/or Nonassignable Inventions. To the extent that any third parties have any rights in or to any Prior Inventions or any Nonassignable Inventions, I represent and warrant that such third party or parties have validly and irrevocably granted to me the right to grant the license stated above. For purposes of this paragraph, “Prior Inventions” includes any Inventions that would be classified as Prior Inventions, whether or not they are listed on the signature page to this Agreement. 2.4 Assignment of Company Inventions. I hereby assign to Employer all my right, title, and interest in and to any and all Company Inventions other than Nonassignable Inventions and agree that such assignment includes an assignment of all Moral Rights. To the extent such Moral Rights cannot be assigned to Employer and to the extent the following is allowed by the laws in any country where Moral Rights exist, I hereby unconditionally and irrevocably waive the enforcement of such Moral Rights, and all claims and causes of action of any kind against Employer or related to Employer’s customers, with respect to such rights. I further agree that neither my successors-in-interest nor legal heirs retain any Moral Rights in any Company Inventions. Nothing contained in this Agreement may be construed to reduce or limit Company’s rights, title, or interest in any Company Inventions so as to be less in any respect than that Company would have had in the absence of this Agreement.
(a) Prior Inventions. (i) On Schedule A, I have provided a list describing all inventions, original works of authorship, developments, improvements, and trade secrets that were made by me prior to my employment with the Company (collectively, the “Prior Inventions”), that belong to me, and which relate to the Company’s proposed business, products or research and development; or, if no such list is attached, I represent that there are no such Prior Inventions. Under the heading “Assigned” on Schedule A, I have listed those Prior Inventions that are being assigned to the Company hereunder, if any (collectively, the “Assigned Prior Inventions”). If applicable, under the heading “Not Assigned” on Schedule A, I have listed those Prior Inventions that are not being assigned to the Company hereunder, if any (collectively, the “Not Assigned Prior Inventions”). I hereby assign to the Company, or its designee, all my right, title, and interest in and to any and all Assigned Prior Inventions, if any, without any further consideration therefor. I agree that I will not incorporate, or permit to be incorporated, any Not Assigned Prior Inventions owned by me or in which I have an interest into a Company product, process, or machine without the Company’s prior written consent. Notwithstanding the foregoing sentence, if, in the course of my employment with the Company, I incorporate into a Company product, process, or machine a Not Assigned Prior Invention owned by me or in which I have an interest, the Company is hereby granted and shall have a non-exclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use, and sell such Prior Invention as part of or in connection with such product, process, or machine.
To preclude any possible uncertainty, the Executive has set forth on Exhibit B attached hereto a complete list of Developments that Executive has, alone or jointly with others, conceived, developed, or reduced to practice prior to the commencement of the Executive’s employment with the Company that Executive considers to be Executive’s property or the property of third parties and that the Executive wishes to have excluded from the scope of this Agreement (“Prior Inventions”). The Executive has also listed on Exhibit B all patents and patent applications in which Executive is named as an inventor, other than those which have been assigned to the Company (“Other Patent Rights”). If no such disclosure is attached, the Executive represents that there are no Prior Inventions or Other Patent Rights.
(b) Prior Inventions. I agree that I will not incorporate, or permit to be incorporated, Prior Inventions (defined below) in any Company Invention (defined below) without the Company’s prior written consent. I have attached hereto, as Exhibit A, a complete list describing with particularity all Inventions, which were made by me prior to the commencement of the Relationship (collectively referred to as “Prior Inventions”), which belong solely to me or belong to me jointly with another, which relate in any way to any of the Company’s proposed businesses, products or research and development, and which are not assigned to the Company hereunder; or, if no such list is attached, I represent that there are no such Prior Inventions. If, in the course of my Relationship with the Company, I have incorporated, or do incorporate, a Prior Invention into any Company product, process, machine, or Company Invention, I hereby unconditionally grant to Company a non-exclusive, perpetual, irrevocable, perpetual, worldwide, fully paid right and license, with the right to sublicense through multiple levels of sublicensees, under all of my Intellectual Property Rights in any and all Prior Inventions used or incorporated in any Company Invention or otherwise used by me in performance of my obligations in connection with the Relationship to: (1) reproduce, create derivative works of, distribute, publicly perform, publicly display, digitally transmit, and otherwise use the Company Invention in any medium or format, whether now known or hereafter discovered, (2) use, make, have made, sell, offer to sell, import, and otherwise exploit any product or service based on, embodying, incorporating, or derived from the Company Invention, and (3) exercise any and all other present or future rights in the Company Invention.
(e) Prior Inventions. Employee shall provide the Company a listing which shall be appended to this Agreement of any and all Inventions, that may relate to the business of the Company or actual or demonstrably anticipated research or development and that were made by the Employee or acquired by the Employee prior to the commencement of the Employee’s employment with the Company, and which are not to be assigned to the Company (“Prior Inventions”). If no such list is attached, the Employee represents and agrees that it is because the Employee has no rights in any existing Inventions that may relate to the Company’s business or actual or demonstrably anticipated research or development. The Employee acknowledges and agrees that if the Employee uses or includes any Prior Inventions in the scope of the Employee’s employment or in any product or service in the Company, or if the Employee’s rights in any Prior Inventions may block or interfere with, or may otherwise be required for, the exercise by the Company of any rights assigned to the Company under this Agreement, the Employee shall immediately notify the Company in writing. Unless the Company and the Employee agree otherwise in writing as to particular Prior Inventions, the Employee grants the Company, in such circumstances (whether or not the Employee gives the Company notice as required above), a non-exclusive, perpetual, transferrable, fully- paid and royalty free, irrevocable and worldwide license, with rights to sublicense through multiple levels of sublicensees, to reproduce, make derivative works of, distribute, publicly perform, and publicly display in any form or medium, whether now known or later developed, make, have made, use, sell, import, offer for sale, and exercise any and all present or future rights in, such Prior Inventions. To the extent that any third parties have rights in any such Prior Inventions, the Employee hereby represents and warrants that such third party or parties have validly and irrevocably granted the Employee the right to grant the license stated above. In the event Employee becomes aware of any potential infringement regarding Prior Inventions, Employee shall immediately notify the Company. Employee agrees to indemnify and hold harmless the Company, its affiliates and its and their officers, directors, employees and representatives from any claims, losses or costs associated with a potential infringement claim related to any Prior Inventions.
EXHIBIT A INVENTIONS 1. Prior Inventions Disclosure. The following is a complete list of all Prior Inventions (as provided in Subsection 2.2 of the attached Employee Proprietary Information and Inventions Assignment Agreement, defined herein as the “Agreement”): ☒ None ☐ See immediately below:
2.2 Prior Inventions. I have disclosed on Exhibit A a complete list of all Inventions that (a) I have, or I have caused to be, alone or jointly with others, conceived, developed, or reduced to practice prior to the commencement of my employment by Company; (b) in which I have an ownership interest or which I have a license to use; (c) and that I wish to have excluded from the scope of this Agreement (collectively referred to as “Prior Inventions”). If no Prior Inventions are listed in Exhibit A or if I have not completed Exhibit A, I warrant that there are no Prior Inventions. I agree that I will not incorporate, or permit to be incorporated, Prior Inventions in any Company Inventions (defined below) without Company’s prior written consent. If, in the course of my employment with Company, I incorporate a Prior Invention into a Company process, machine or other work, I hereby grant Company a non-exclusive, perpetual, fully-paid and royalty- free, irrevocable and worldwide license, with rights to sublicense through multiple levels of sublicensees, to reproduce, make derivative works of, distribute, publicly perform, and publicly display in any form or medium, whether now known or later developed, make, have made, use, sell, import, offer for sale, and exercise any and all present or future rights in, such Prior Invention.
(iii) Prior Inventions. (A) On the signature page to your Employee Confidential Information and Inventions Assignment Agreement with the Company (the “Confidentiality Agreement”) is a list describing any Inventions that (i) are owned by you or in which you have an interest and that were made or acquired by you prior to your date of first employment by the Company, (ii) may relate to the Company’s business or actual or demonstrably anticipated research or development and (iii) are not to be assigned to the Company (“Prior Inventions”). If no such list is attached, you represent and warrant that no Inventions that would be classified as Prior Inventions exist as of the date of your Confidentiality Agreement. (B) You agree that if you use any Prior Inventions and/or Nonassignable Inventions in the scope of your employment, or if you include any Prior Inventions and/or Nonassignable Inventions in any product or service of the Company, or if your rights in any Prior Inventions and/or any Nonassignable Inventions may block or interfere with, or may otherwise be required for, the exercise by the Company of any rights assigned to the Company under the Covenants (each, a “License Event”), (i) you will immediately notify the Company in writing, and (ii) unless the Company and you agree otherwise in writing, you hereby grant to the Company a non-exclusive, perpetual, transferable, fully-paid, royalty-free, irrevocable, worldwide license, with rights to sublicense through multiple levels of sublicensees, to reproduce, make derivative works of, distribute, publicly perform, and publicly display in any form or medium (whether now known or later developed), make, have made, use, sell, import, offer for sale, and exercise any and all present or future rights in, such Prior Inventions and/or Nonassignable Inventions. To the extent that any third parties have any rights in or to any Prior Inventions or any Nonassignable Inventions, you represent and warrant that such third party or parties have validly and irrevocably granted to you the right to grant the license stated above. For purposes of this paragraph, “Prior Inventions” includes any Inventions that would be classified as Prior Inventions, whether or not they are listed on the signature page to your Confidentiality Agreement.
“Prior Inventions” refers to inventions, ideas, or works that an individual or entity has developed before entering into a contractual agreement, often in the context of employment or intellectual property agreements. These prior inventions are acknowledged in legal terms to ensure that they are not subject to claims or ownership changes by the new party or employer.
You should use “Prior Inventions” in contracts and legal documents when:
When writing about “Prior Inventions” in a contract, consider the following steps:
Enumerate the inventions: Clearly list and describe each invention, including specific details that uniquely identify the work.
Include supporting documentation: Attach patents, copyrights, dated sketches, or other evidence that supports your ownership.
Declare ownership rights: State explicitly that these prior inventions are excluded from the intellectual property or ownership terms of the current agreement.
Contracts that typically contain “Prior Inventions” clauses include:
Employment Agreements: Particularly where the role involves research, development, or any form of creation that could result in new inventions or intellectual property.
Non-Disclosure Agreements (NDAs): To disclose, but protect, prior inventions while engaging in discussions that may involve trade secrets or confidential information.
Partnership Agreements: When forming alliances, partners may include prior inventions to protect existing assets while collaborating on new projects.
Licensing Agreements: To distinguish between technologies or works already developed and those to be created under the collaboration.
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